Monthly Archives: February 2014

Several months ago, President Obama re-sparked a controversy about the use of the name “Redskins” by Washington’s NFL football team when he suggested that the team’s owner should consider changing their name. Recently a delegate from the American territory of American Samoa filed a bill in Congress to cancel any trademark registration with that term. Simultaneously, a cancellation proceeding is pending before the U.S. Trademark Trial and Appeal Board (“TTAB”) to terminate six (6) registrations that contain the term REDSKINS in the trademark on the grounds that the term is offensive to Native Americans. At least three (3) of these registrations were issued in 1974, one issued in 1978, and the earliest issued in 1967. The term REDSKINS has been used by the NFL since at least as early as 1932!

If either of these efforts prevail, the team may feel sufficient pressure to change their name. This is not the first time the team has faced this campaign. When they made it to the Super Bowl in 1992, Native Americans protested outside the Super Bowl venue in Minneapolis against the team’s use of the name and mascot. Around the same time, a trademark action to cancel various trademark registrations containing the term REDSKINS on the ground that the trademarks should not be registered because they are immoral, scandalous or offensive initially succeeded before the TTAB before being overturned by the U.S. District Court in D.C., in part, because the filing parties waited too long to raise their complaints.

Whether the term is controversial depends upon who you ask. While members of the Oneida Indian tribe believe it is offensive, many Washington fans view the name as a sign of toughness and strength. Regardless of these views, there is also a question of constitutionality: should a law be upheld that dictates the prohibition of the registration, not the use, of a term because it is viewed as offensive? By what standard is it deemed offensive? What if it becomes not offensive? The Trademark Office already provides a forum, i.e., a cancellation proceeding, to object to such registrations, which is currently being utilized by the objecting parties. The use of the federal government through attempted legislation seems heavy handed. Indeed, in the 1989 case of Texas v. Johnson, 491 US 397, Supreme Court Justice William Brennan stated, “If there is a bedrock principle underlying the First Amendment, it is that the government may not prohibit the expression of an idea simply because society finds the idea itself offensive or disagreeable.” In this case, it appears to be a limited faction of society that contends the registration of REDSKINS is offensive. We shall soon see which view ends up holding sway.

Scrolling down a page on the internet, you find a photograph of a beautiful resort in Bora Bora, which incidentally happens to be your next vacation destination. Since you are leaving in two weeks for the overdue trip, you post the photograph on your Facebook page with a caption that reads “Where I will be in 14 days.”

Innocent enough? Below the image there are two words: “Getty Images”. Who is “Getty Images” and what does it matter? It matters. Getty Images is one of the biggest stock photo agencies in the world. They license users who can, for the time period of the agreement, use the licensed photograph(s) on their social, news or business websites upon the payment of an agreed-upon fee. What, though, if the image does not have any indication of ownership? It must be free to use, right? In all instances, the simple answer is no.

Use of an image found on the Internet is likely to expose you to a claim of copyright infringement. Indeed, Getty Images aggressively polices the images they are authorized to license by sending out letters demanding that the unauthorized user of the image immediately stop using the image and remove it from their site. Included in this demand to cease use of the image is a demand for what could amount to an exorbitant sum of money for damages that Getty Images claims that the recipient of the letter owes.
So does the soon-to-be vacationer have to worry about getting one of these stark cease and desist letters? The pattern of enforcement by Getty Images appears to be directed to those who may profit financially from the use of the photograph on a news or business website. Thus, if the person in this hypothetical operates a travel agency and utilizes the image on the agency’s website, then the answer would be “Yes”, provided the agency, or user, has no licensing agreement with Getty Images. However, Getty Images specifically licenses use of images for social networking sites. Thus, it appears that any unauthorized user is a target for one of these letters.

Would that travel agency, or unauthorized user, have to pay damages to Getty Images for the unauthorized use of the photograph? Under copyright laws, the unauthorized use of a photograph is copyright infringement. Thus, an unauthorized user could be liable for damages, especially if Getty Images can show how long the photograph was used and if that use generated a profit for the unauthorized user. Many companies or individuals, who have intentionally or unintentionally, used images within the control of Getty Images without a license, have found that mere removal of the photograph is not enough to resolve the matter. This also applies to actual licensees who continued to use a licensed photograph after their license agreement with Getty expired.

If you received such a letter, the best thing to do is immediately contact an Intellectual Property attorney who handles copyright infringement matters. Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues. To discuss your particular matter with Ms. Vradenburgh, please contact her at the Eclipse Group, located at 6345 Balboa Blvd, Suite 325, Encino, California 91316, by calling (818) 488-8146 or going to her website. She can provide expert advice to you about your case and represent you in a copyright action, or other intellectual property actions that you may be facing.